Tumblr, Inc. v. Lucjan Misiag
Claim Number: FA1402001544237
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Lucjan Misiag (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tumblt.com>, registered with Name.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2014; the National Arbitration Forum received payment on February 18, 2014.
On February 19, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <tumblt.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tumblt.com. Also on February 19, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <tumblt.com> domain name is confusingly similar to Complainant’s TUMBLR mark.
2. Respondent does not have any rights or legitimate interests in the <tumblt.com> domain name.
3. Respondent registered and uses the <tumblt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant’s registration of the TUMBLR mark with the USPTO satisfies Policy ¶ 4(a)(i), showing Complainant’s rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel notes that Policy ¶ 4(a)(i) does not require that the mark be registered in the country in which Respondent operates. See Tumblr, Inc. v. zhao xiaobing, FA1303001492271 (Nat. Arb. Forum May 14, 2013) (finding that since Policy ¶ 4(a)(i) “does not require that the mark be registered in the country in which Respondent operates”).
Respondent’s <tumblt.com> domain name differs from Complainant’s mark by only one letter, which does not differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). The addition of the generic top-level domain (“gTLD”) “.com” is technically required for the operation of a domain name, and thus it is without legal significance in an inquiry of similarity. See Tumblr, Inc. v. Above.com Domain Privacy/Transure EnterpriseLtd., Host Master, D2013-0213 (WIPO March 29, 2013). Therefore, the Panel finds that Respondent’s <tumblt.com> domain name is confusingly similar to Complainant’s TUMBLR mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <tumblt.com> domain name, and that Complainant has not authorized Respondent to use its TUMBLR mark. The WHOIS record lists “Lucjan Misiag” as the registrant of the <tumblt.com> domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC, FA 1142567 (Nat. Arb. Forum Mar. 25, 2008) (holding respondent has no rights or legitimate interests pursuant to Section 4(c)(ii) because there is no evidence in the record or Whois information indicating respondent is commonly known by the disputed domain name and because complainant did not authorize respondent to use its YAHOO! mark).
Complainant contends that Respondent’s use of the <tumblt.com> domain name to direct traffic to a parked webpage containing links for competing products and/or services does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant asserts that Respondent’s website directs Internet users to the website <searchresultsguide.com>, which features generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that the links provided on Respondent’s website include “How To Start A Blog,” “How To Create a Website,” and “How To Blog – Free Guide.” Complainant asserts that Respondent receives pay-per-click fees from the linked websites. In Public Service Enterprise Group, Inc. and its affiliates and subsidiaries v. Douglas Kirk, D2013-1378 (WIPO Nov. 6, 2013), the panel determined that “It is well established that operating a link farm parking page using a distinctive trademark in a domain name and providing connection to goods and/or services competitive with the trademark owner, does not establish rights or legitimate interests.” The Panel therefore finds that Respondent’s use of the <tumblt.com> domain name does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered the <tumblt.com> domain name using Complainant’s mark to cause confusion and divert consumers to Respondent’s website. The Panel agrees and finds that Respondent is using the <tumblt.com> domain name to attract consumers for its own commercial gain, bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent’s disputed domain name constitutes typosquatting, using Complainant’s mark with a minor typographical error. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Consequently, the Panel finds that Respondent has engaged in typosquatting, demonstrating bad faith use and registration under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent registered the <tumblt.com> domain name with Complainant’s mark in mind. Complainant contends that Respondent did not acquire the disputed domain name until January of 2014, whereas Complainant first made use of its TUMBLR mark in 2007. Complainant argues that Respondent undoubtedly acquired that disputed domain name in bad faith with actual knowledge of Complainant’s rights in its TUMBLR mark because Complainant’s mark is internationally recognized and famous and is registered in the United States, Europe, and elsewhere throughout the world. The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tumblt.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 24, 2014
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